DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of claims 1-13 (Group I) in the reply filed on 05/15/2026 is acknowledged. The traversal is on the ground(s) that the claimed invention is characterized by evaluating not only an increase or decrease in expression of the second reporter gene relative to that of the first reporter gene, but also an increase or decrease in expression of the first reporter gene itself in the presence and absence of the chemical substance. This is not found persuasive because while WO 2012/002507 A1 (hereinafter Tohoku; as cited in Applicant IDS; machine translation relied upon for English translation; of record) does disclose quantification of relative expression at paragraph [0054], Tohoku also discloses quantification of the expression products of the first reporter gene in the presence and absence of a candidate compound to be screened at claim 14, as required by independent claims 1, 4, and 7.
However, even if one does not accept that Tohoku discloses measuring an increase or decrease in expression of the first reporter gene itself in the presence and absence of the queried chemical substance, this methodology is also disclosed in Wakuri et al., 2017 (hereinafter Wakuri; as cited in Applicant IDS). Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Thus, it is not found persuasive that the inventions of Groups I and II are linked by a special technical feature. The requirement is still deemed proper and is therefore made FINAL.
Claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/15/2026.
Accordingly, claims 1-13 are pending and under consideration.
Priority
The instant application claims priority to PCT/JP2020/049116, which was filed 12/28/2020. The earliest effective filing date to which the instant application is entitled is 12/28/2020.
Information Disclosure Statement
Receipt of information disclosure statements on 06/27/2023, 11/04/2024, and 04/04/2025 is acknowledged. The signed and initialed PTO-1449‘s have been mailed with this action.
Claim Objections
Claims 1-4, 6, 9, 10, and 12 are objected to because of the following informalities:
Claims 1, 4, and 7 all include preambles that respectively recite “a method for evaluating immunotoxicity of a chemical substance to a mammal, comprising,” “a method for screening an immunosuppressant comprising,” and “a method for screening an anticancer drug, comprising…”. In order to comport with standard grammatical and/or linguistic conventions, it would be remedial to amend the preambles of claims 1, 4, and 7 to properly include a colon following “comprising” and preceding the recited steps.
Similarly, claim 10 recites “the method according to claim 1, further comprising step 3: comparing and evaluating an increase or decrease in expression of the second reporter gene in the presence and absence of the chemical substance,” which while not strictly improper is nonetheless structured such that interpretation is hindered. For purposes of more closely following standard grammatical and/or linguistic conventions, thereby facilitating claim interpretation, it would be remedial to amend instant claim such that it recites, for example, “the method according to claim 1, further comprising:
step 3: comparing and evaluating an increase or decrease in expression of the second reporter gene in the presence and absence of the chemical substance.”
This is merely an example set forth by the Examiner and is not intended to be limiting.
Additionally, claims 2, 3, 6, and 9 all recite limitations regarding the analysis of expression levels of the reporter gene(s) of the instantly claimed system, wherein each claim ends, respectively, by reciting “it is determined that the chemical substance likely has cell growth inhibition action and/or metabolic activity inhibition action,” “it is determined that the chemical substance unlikely has cell growth inhibition action and/or metabolic activity inhibition action,” “it is determined that the chemical substance is unlikely effective as an immunosuppressant that mediates cell growth inhibition action and/or metabolic activity inhibition action,” and “it is determined that the chemical substance is unlikely effective as an anticancer drug that mediates cell growth inhibition action and/or metabolic activity inhibition action.” These recitations are phrased awkwardly such that clear interpretation is somewhat hindered. For purposes of clarity, it would be remedial to amend the instant claim language to recite, respectively, “it is determined that the chemical substance likely inhibits cell growth and/or metabolic activity,” “it is determined that the chemical substance unlikely inhibits cell growth and/or metabolic activity,” “it is determined that the chemical substance is unlikely effective as an immunosuppressant that inhibits cell growth and/or metabolic activity, and “it is determined that the chemical substance is unlikely effective as an anticancer drug that inhibits cell growth and/or metabolic activity.” These are merely examples set forth by the Examiner and are not intended to be limiting.
Finally, claim 12 recites “wherein the reporter genes are a luciferase” (bolded and underlined emphasis added), which does not comport with standard grammatical and/or linguistic conventions. The plural “genes” is inconsistent with the singular “luciferase” recited therein. In order to comport with standard grammatical and/or linguistic conventions, it would be remedial to amend instant claim 12 to recite “wherein the reporter genes are luciferases” (bolded and underlined emphasis added). This is merely an example set forth by the Examiner and is not intended to be limiting.
Overall, the Examiner notes that the instant claim set would benefit from careful review for grammar and clarity.
Appropriate correction is required.
Applicant is advised that should claims 4 and 7 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In the instant case, instant claim 1 (from which instant claim 13 depends) is drawn to a method for evaluating immunotoxicity of a chemical substance, wherein the chemical substance is limited at instant claim 13 to an immunosuppressant (as in claim 4) or an anticancer drug (as in claim 7). Therefore, instant claim 13 is considered to be a substantial duplicate of instant claims 4 and 7.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon and an abstract idea/mental process without significantly more. The claims recite methods for evaluating the immunotoxicity of chemical substances such as immunosuppressants or anticancer drugs, said methods comprising contacting a mammalian cell comprising a first reporter gene under the control of a constant expression promoter and a second reporter gene under the control of a promoter for immunotoxicity evaluation and evaluating an increase or decrease in expression of the second reporter gene relative to that of the first reporter gene and an increase or decrease in expression of the first reporter gene in the presence and absence of the chemical substance. The evaluation of the increase or decrease in expression of the second reporter gene relative to that of the first reporter gene as well as of the first reporter gene is the readout which determines whether the queried chemical substance is immunotoxic. The broadest reasonable interpretation of the claimed product is that it reads on a natural phenomenon and a mental process. Accordingly, the claims recite a natural phenomenon and a mental process.
The judicial exception is not integrated into a practical application.
As set forth above, instant claims 1, 4, and 7 are drawn to methods for evaluating the immunotoxicity of chemical substances such as immunosuppressants or anticancer drugs, said methods comprising contacting a mammalian cell comprising a first reporter gene under the control of a constant expression promoter and a second reporter gene under the control of a promoter for immunotoxicity evaluation and evaluating an increase or decrease in expression of the second reporter gene relative to that of the first reporter gene and an increase or decrease in expression of the first reporter gene in the presence and absence of the chemical substance. It is considered that the increase or decrease of expression reads on a natural phenomenon, as an increase or decrease of expression is a natural property of the queried chemical substance. Furthermore, the evaluation of said increase or decrease reads on a mental process, as said evaluation can be performed in the mind.
Dependent claims 2, 3, 5, 6, 8, and 9 further limit the evaluation step of instant claims 1, 4, and 7. However, as set forth above, it is considered that the increase or decrease of expression reads on a natural phenomenon, as an increase or decrease of expression is a natural property of the queried chemical substance imparted by its natural immunotoxicity. Furthermore, the evaluation of said increase or decrease reads on a mental process, as said evaluation can be performed in the mind. None of these dependent claims include additional limitations that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 10-13 respectively further limit the method of claim 1 regarding the evaluation of an increase or decrease in expression of the second reporter gene in the presence and absence of the chemical substance, the type of cell used in the instantly claimed method, the type of readout reporter genes, and the type of queried chemical substance. None of these dependent claims include additional limitations that are sufficient to amount to significantly more than the judicial exception.
Therefore, claims 1-13 are directed to judicial exceptions, as the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Viewed as a whole, the additional claim elements do not provide meaningful limitation(s) to transform the judicial exception such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/002507 A1 (hereinafter Tohoku; as cited in Applicant IDS; machine translation relied upon for English translation; of record) in view of Wakuri et al., 2017 (hereinafter Wakuri; as cited in Applicant IDS) and Liu et al., 2009 (hereinafter Liu).
With regard to claim 1, which recites “a method for evaluating immunotoxicity of a chemical substance to a mammal, comprising[:]
step 1: bringing a chemical substance into contact with a mammalian cell for immunotoxicity evaluation, the mammalian cell having a first reporter gene under control of a constant expression promoter and a second reporter gene under control of a promoter for immunotoxicity evaluation incorporated in a transiently or stably expressible manner; and
step 2: evaluating an increase or decrease in expression of the second reporter gene relative to that of the first reporter gene and an increase or decrease in expression of the first reporter gene in the presence and absence of the chemical substance,” as previously set forth, Tohoku discloses technology to analyze immunotoxicity of chemical substances via high-throughput analysis (paragraph [0005]). Such technology includes mammalian cells for immunotoxicity assessment, wherein said mammalian cells have two or more reporter genes such as luciferase under the control of separate promoters (paragraph [0010]). The first reporter gene is under the control of a steadily expressed promoter, and the second reporter gene is under the control of a promoter for immunotoxicity evaluation, wherein the promoter controlling the second reporter gene drives transient or stable expression thereof in the mammalian cells taught therein (paragraph [0010]). Tohoku further discloses a method of contacting the mammalian cells taught therein (and set forth above) with a queried chemical substance, followed by evaluating increase or decrease in expression of the second reporter gene in the presence or absence of the queried chemical substance, relative to the control reporter (paragraphs [0010] and [0024]; Figures 5 and 6) as well as quantifying the expression products of the first reporter gene in the presence and absence of the queried chemical substance (claim 14). Thus, it is considered that Tohoku discloses a method for evaluating the immunotoxicity of a chemical substance in mammalian cells, as instantly claimed.
However, if one does not accept that Tohoku discloses measuring an increase or decrease in expression of the first reporter gene itself in the presence and absence of the queried chemical substance, this methodology is also disclosed in Wakuri. Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Accordingly, it is considered that Tohoku and Wakuri collectively disclose each and every limitation of instant claim 1.
With regard to claim 2, which recites “in step 2 [of the method of claim 1], when the expression level of the second reporter gene relative to the expression level of the first reporter gene in the presence of the chemical substance is increased as compared with the expression level of the second reporter gene relative to the expression level of the first reporter gene in the absence of the chemical substance, and when the expression level of the first reporter gene in the presence of the chemical substance is decreased as compared with the expression level of the first reporter gene in the absence of the chemical substance, it is determined that the chemical substance likely has cell growth inhibition action and/or metabolic activity inhibition action” (bolded emphasis added), as set forth above, Tohoku and Wakuri collectively disclose the method of claim 1. While Tohoku discloses that reporter activity is evaluated at paragraph [0019], Tohoku is silent as to the interpretation of reporter activity/expression. Comparable to Tohoku, Liu discloses a dual luciferase assay for assessment of cytotoxicity (abstract; page 171, column 1, paragraph 1-column 2, paragraph 1). In the assay of Liu, two luciferases are controlled by two separate promoters, wherein one luciferase species is fused to the constitutive CMV promoter and provides a control for cell numbers, and wherein the other luciferase species is fused to an inducible promoter (abstract; page 163, column 1, paragraph 2). According to the disclosure of Liu, luciferase activities are measured in the presence and absence of tested substance(s) such that results are expressed as the ratio of the two luciferase activities, wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity (abstract; page 165, column 2, paragraph 2; Tables 2 and 4).
Regarding the limitations regarding the expression level of the first reporter gene in the presence and absence of the queried chemical substance, Wakuri also discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Thus, Liu and Wakuri disclose the additional analytical limitations of instant claim 2. Accordingly, it is considered that Tohoku, Liu, and Wakuri collectively disclose each and every limitation of instant claim 2.
With regard to claim 3, which recites “in step 2 [of the method according to claim 1], when the expression level of the second reporter gene relative to the expression level of the first reporter gene in the presence of the chemical substance is decreased or constant as compared with the expression level of the second reporter gene relative to the expression level of the first reporter gene in the absence of the chemical substance, and/or when the expression level of the first reporter gene in the presence of the chemical substance is increased or constant as compared with the expression level of the first reporter gene in the absence of the chemical substance, it is determined that the chemical substance unlikely has cell growth inhibition action and/or metabolic activity inhibition action,” (bolded and underlined emphasis added) as set forth above, Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2; page 28, column 1, paragraphs 2 and 3). Thus, based on the disclosure of Wakuri, one of ordinary skill in the art would reasonably predict that an increase in luminescence intensity from an internal control luciferase reporter (expressed from a constitutive promoter) is associated with a decrease in cytotoxicity (abstract; page 19, column 1, paragraph 2; page 28, column 1, paragraphs 2 and 3).
Thus, Wakuri discloses the additional analytical limitations of instant claim 3. Accordingly, it is considered that Tohoku and Wakuri collectively disclose each and every limitation of instant claim 3.
With regard to claim 10, which recites “the method according to claim 1, further comprising[:] step 3: comparing and evaluating an increase or decrease in expression of the second reporter gene in the presence and absence of the chemical substance,” Tohoku further discloses that the methods for assessing immunotoxicity taught therein (paragraph [0005]) comprise evaluating the increase or decrease in expression of the second reporter gene in the presence or absence of the drug candidate compound (claim 12), as instantly claimed. Thus, it is considered that Tohoku anticipates each and every limitation of instant claim 10.
With regard to claim 11, which recites “the mammalian cell for immunotoxicity evaluation [of the method according to claim 1] is a Jurkat cell,” Tohoku further discloses that suitable cells for the methods taught therein include Jurkat cells, which are in fact preferred for immunotoxicity evaluation (paragraph [0017]). Thus, it is considered that Tohoku anticipates each and every limitation of instant claim 11.
With regard to claim 12, which recites “the reporter genes [of the method according to claim 1] are a luciferase [sic], and the maximum emission wavelength differs between the reporter genes by 20 nm or greater,” Tohoku further discloses that the methods taught therein utilize two or more luciferases emitting mutually separable light, meaning the maximum emission wavelength is usually more than 20 nm different between luciferases (paragraphs [0010], [0027], and [0028]; claim 5). Thus, it is considered that Tohoku anticipates each and every limitation of instant claim 12.
With regard to claim 13, which recites “the chemical substance [of the method according to claim 1] is at least one chemical substance selected from the group consisting of anticancer drugs, drugs that induce immunosuppression through cell growth inhibition and/or metabolic activity inhibition, immunosuppressants, and non-immunosuppressants,” Tohoku further discloses that the methods taught therein are amenable to evaluating the immunotoxicity of immunosuppressive drugs such as dexamethasone and cyclosporine (paragraph [0046]). Thus, it is considered that Tohoku anticipates each and every limitation of instant claim 13.
Given that Tohoku discloses a method for evaluating immunotoxicity of a chemical substance, wherein said method involves assessing the expression/activity of two separate luciferase species in the presence and absence of the queried chemical substance in Jurkat cells, that Liu discloses a dual luciferase assay for assessing cytotoxicity of queried chemical substances, wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity, and that Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself in that luciferase luminescence intensity decreases as cytotoxicity increases, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to analyze the expression/activity of the separate luciferase species disclosed in Tohoku per the methods of Liu and Wakuri, both of which are also drawn to dual luciferase-based assessment of cytotoxicity, to predictably assess the cytotoxicity of queried chemical substances in a robust and high-throughput manner. One would have been motivated to make such a modification in order to receive the expected benefit of assessing the cytotoxicity of queried chemical substances in a robust and high-throughput manner.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/002507 A1 (hereinafter Tohoku; as cited in Applicant IDS; machine translation relied upon for English translation; of record) in view of Wakuri et al., 2017 (hereinafter Wakuri; as cited in Applicant IDS), Liu et al., 2009 (hereinafter Liu), and Schein and Winokur, 1975 (hereinafter Schein).
With regard to claim 4, which recites “a method for screening an immunosuppressant comprising[:]
step 1: bringing a chemical substance into contact with a mammalian cell for immunotoxicity evaluation, the mammalian cell having a first reporter gene under control of a constant expression promoter and a second reporter gene under control of a promoter for immunotoxicity evaluation incorporated in a transiently or stably expressible manner; and
step 2: evaluating an increase or decrease in expression of the second reporter gene relative to that of the first reporter gene and an increase or decrease in expression of the first reporter gene in the presence and absence of the chemical substance,” as previously set forth and above, Tohoku discloses technology to analyze immunotoxicity of chemical substances such as immunosuppressive drugs via high-throughput analysis (paragraphs [0005] and [0046]). Such technology includes mammalian cells for immunotoxicity assessment, wherein said mammalian cells have two or more reporter genes such as luciferase under the control of separate promoters (paragraph [0010]). The first reporter gene is under the control of a steadily expressed promoter, and the second reporter gene is under the control of a promoter for immunotoxicity evaluation, wherein the promoter controlling the second reporter gene drives transient or stable expression thereof in the mammalian cells taught therein (paragraph [0010]). Tohoku further discloses a method of contacting the mammalian cells taught therein (and set forth above) with a queried chemical substance, followed by evaluating increase or decrease in expression of the second reporter gene in the presence or absence of the queried chemical substance, relative to the control reporter (paragraphs [0010] and [0024]; Figures 5 and 6) as well as quantifying the expression products of the first reporter gene in the presence and absence of the queried chemical substance (claim 14). Thus, Tohoku discloses a method for evaluating the immunotoxicity of an immunosuppressant in mammalian cells, as instantly claimed. Thus, it is considered that Tohoku discloses a method for evaluating the immunotoxicity of a chemical substance such as an immunosuppressant in mammalian cells, as instantly claimed.
However, if one does not accept that Tohoku discloses measuring an increase or decrease in expression of the first reporter gene itself in the presence and absence of the queried chemical substance, this methodology is also disclosed in Wakuri. Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Accordingly, it is considered that Tohoku and Wakuri collectively disclose each and every limitation of instant claim 4.
With regard to claim 5, which recites “in step 2 [of the method of claim 4], when the expression level of the second reporter gene relative to the expression level of the first reporter gene in the presence of the chemical substance is increased as compared with the expression level of the second reporter gene relative to the expression level of the first reporter gene in the absence of the chemical substance, and when the expression level of the first reporter gene in the presence of the chemical substance is decreased as compared with the expression level of the first reporter gene in the absence of the chemical substance, it is determined that the chemical substance is likely effective as an immunosuppressant” (bolded emphasis added), as set forth above, Tohoku and Wakuri collectively disclose. While Tohoku discloses that reporter activity is evaluated at paragraph [0019], Tohoku is silent as to the interpretation of reporter activity/expression. Comparable to Tohoku and Wakuri, Liu discloses a dual luciferase assay for assessment of cytotoxicity (abstract; page 171, column 1, paragraph 1-column 2, paragraph 1). In the assay of Liu, two luciferases are controlled by two separate promoters, wherein one luciferase species is fused to the constitutive CMV promoter and provides a control for cell numbers, and wherein the other luciferase species is fused to an inducible promoter (abstract; page 163, column 1, paragraph 2). According to the disclosure of Liu, luciferase activities are measured in the presence and absence of tested substance(s) such that results are expressed as the ratio of the two luciferase activities, wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity (abstract; page 165, column 2, paragraph 2; Tables 2 and 4). Those of ordinary skill in the art would also be aware, prior to the effective filing date of the instant application, that immunosuppressive drugs are known to carry a risk of cytotoxicity (reviewed in Schein: see abstract).
Regarding the limitations regarding the expression level of the first reporter gene in the presence and absence of the queried chemical substance, Wakuri also discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Thus, Liu, Wakuri, and Schein disclose the additional analytical limitations of instant claim 5. Accordingly, it is considered that Tohoku, Liu, Wakuri, and Schein collectively disclose each and every limitation of instant claim 5.
With regard to claim 6, which recites “in step 2 [of the method according to claim 4], when the expression level of the second reporter gene relative to the expression level of the first reporter gene in the presence of the chemical substance is decreased or constant as compared with the expression level of the second reporter gene relative to the expression level of the first reporter gene in the absence of the chemical substance, and/or when the expression level of the first reporter gene in the presence of the chemical substance is increased or constant as compared with the expression level of the first reporter gene in the absence of the chemical substance, it is determined that the chemical substance is unlikely effective as an immunosuppressant that mediates cell growth inhibition action and/or metabolic activity inhibition action,” (bolded and underlined emphasis added) as set forth above, Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2; page 28, column 1, paragraphs 2 and 3). Thus, based on the disclosure of Wakuri, one of ordinary skill in the art would reasonably predict that an increase in luminescence intensity from an internal control luciferase reporter (expressed from a constitutive promoter) is associated with a decrease in cytotoxicity (abstract; page 19, column 1, paragraph 2; page 28, column 1, paragraphs 2 and 3). Those of ordinary skill in the art would also be aware, prior to the effective filing date of the instant application, that immunosuppressive drugs are known to carry a risk of cytotoxicity (reviewed in Schein: see abstract).
Thus, Wakuri and Schein disclose the additional analytical limitations of instant claim 6. Accordingly, it is considered that Tohoku, Wakuri, and Schein collectively disclose each and every limitation of instant claim 6.
Given that Tohoku discloses a method for evaluating immunotoxicity of an immunosuppressant (which are known to carry a risk of cytotoxicity as taught by Schein), wherein said method involves assessing the expression/activity of two separate luciferase species in the presence and absence of the queried chemical substance, that Liu discloses a dual luciferase assay for assessing cytotoxicity of queried chemical substances, wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity, and that Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself in that luciferase luminescence intensity decreases as cytotoxicity increases, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to analyze the expression/activity of the separate luciferase species disclosed in Tohoku per the methods of Liu and Wakuri, both of which are also drawn to dual luciferase-based assessment of cytotoxicity, to predictably assess the cytotoxicity of queried chemical substances such as immunosuppressants in a robust and high-throughput manner, thereby determining the efficacy of said immunosuppressants. One would have been motivated to make such a modification in order to receive the expected benefit of assessing the cytotoxicity of queried chemical substances such as immunosuppressants in a robust and high-throughput manner, thereby determining the efficacy of said immunosuppressants.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/002507 A1 (hereinafter Tohoku; as cited in Applicant IDS; machine translation relied upon for English translation; of record) in view of Wakuri et al., 2017 (hereinafter Wakuri; as cited in Applicant IDS) and Liu et al., 2009 (hereinafter Liu), as evidenced by Maruf and O’Brien, 2014 (hereinafter Maruf).
With regard to claim 7, which recites “a method for screening an anticancer drug comprising[:]
step 1: bringing a chemical substance into contact with a mammalian cell for immunotoxicity evaluation, the mammalian cell having a first reporter gene under control of a constant expression promoter and a second reporter gene under control of a promoter for immunotoxicity evaluation incorporated in a transiently or stably expressible manner; and
step 2: evaluating an increase or decrease in expression of the second reporter gene relative to that of the first reporter gene and an increase or decrease in expression of the first reporter gene in the presence and absence of the chemical substance,” as set forth above and previously, Tohoku discloses technology to analyze immunotoxicity of chemical substances such as immunosuppressive drugs via high-throughput analysis (paragraphs [0005] and [0046]). Such technology includes mammalian cells for immunotoxicity assessment, wherein said mammalian cells have two or more reporter genes such as luciferase under the control of separate promoters (paragraph [0010]). The first reporter gene is under the control of a steadily expressed promoter, and the second reporter gene is under the control of a promoter for immunotoxicity evaluation, wherein the promoter controlling the second reporter gene drives transient or stable expression thereof in the mammalian cells taught therein (paragraph [0010]). Tohoku further discloses a method of contacting the mammalian cells taught therein (and set forth above) with a queried chemical substance, followed by evaluating increase or decrease in expression of the second reporter gene in the presence or absence of the queried chemical substance, relative to the control reporter (paragraphs [0010] and [0024]; Figures 5 and 6) as well as quantifying the expression products of the first reporter gene in the presence and absence of the queried chemical substance (claim 14).
However, if one does not accept that Tohoku discloses measuring an increase or decrease in expression of the first reporter gene itself in the presence and absence of the queried chemical substance, this methodology is also disclosed in Wakuri. Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Thus, Tohoku and Wakuri disclose the instantly claimed method but do not explicitly disclose that the method taught therein may be used to screen an anticancer drug.
This deficiency is cured by Liu. As set forth above, Liu discloses a dual luciferase assay for assessment of cytotoxicity (abstract; page 171, column 1, paragraph 1-column 2, paragraph 1). In the assay of Liu, two luciferases are controlled by two separate promoters, wherein one luciferase species is fused to the constitutive CMV promoter and provides a control for cell numbers, and wherein the other luciferase species is fused to an inducible promoter (abstract; page 163, column 1, paragraph 2). According to the disclosure of Liu, luciferase activities are measured in the presence and absence of tested substance(s) such that results are expressed as the ratio of the two luciferase activities, wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity (abstract; page 165, column 2, paragraph 2; Tables 2 and 4). Liu explicitly discloses that anticancer drugs such as Flutamide may be tested via the methods taught therein (Table 1). Those of ordinary skill in the art would also be aware, prior to the effective filing date of the instant application, that anticancer drugs such as Flutamide are known to exhibit cytotoxicity (reviewed in Maruf: see abstract).
Thus, Tohoku, Wakuri, and Liu disclose each and every limitation of instant claim 7 (as evidenced by Maruf). Accordingly, it is considered that Tohoku, Wakuri, and Liu (as evidenced by Maruf) collectively disclose each and every limitation of instant claim 7.
With regard to claim 8, which recites “in step 2 [of the method of claim 7], when the expression level of the second reporter gene relative to the expression level of the first reporter gene in the presence of the chemical substance is increased as compared with the expression level of the second reporter gene relative to the expression level of the first reporter gene in the absence of the chemical substance, and when the expression level of the first reporter gene in the presence of the chemical substance is decreased as compared with the expression level of the first reporter gene in the absence of the chemical substance, it is determined that the chemical substance is likely effective as an anticancer drug” (bolded emphasis added), as set forth above, Tohoku and Liu collectively disclose the method of claim 7. While Tohoku discloses that reporter activity is evaluated at paragraph [0019], Tohoku is silent as to the interpretation of reporter activity/expression. Comparable to Tohoku, Liu discloses a dual luciferase assay for assessment of cytotoxicity (abstract; page 171, column 1, paragraph 1-column 2, paragraph 1). In the assay of Liu, two luciferases are controlled by two separate promoters, wherein one luciferase species is fused to the constitutive CMV promoter and provides a control for cell numbers, and wherein the other luciferase species is fused to an inducible promoter (abstract; page 163, column 1, paragraph 2). According to the disclosure of Liu, luciferase activities are measured in the presence and absence of tested substance(s) such that results are expressed as the ratio of the two luciferase activities, wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity (abstract; page 165, column 2, paragraph 2; Tables 2 and 4). Those of ordinary skill in the art would also be aware, prior to the effective filing date of the instant application, that anticancer drugs such as Flutamide are known to exhibit cytotoxicity (reviewed in Maruf: see abstract).
Regarding the limitations regarding the expression level of the first reporter gene in the presence and absence of the queried chemical substance, Wakuri also discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2). Thus, Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself (page 28, column 1, paragraphs 2 and 3).
Thus, Liu and Wakuri disclose the additional analytical limitations of instant claim 8. Accordingly, it is considered that Tohoku, Liu, and Wakuri (as evidenced by Maruf) collectively disclose each and every limitation of instant claim 8.
With regard to claim 9, which recites “in step 2 [of the method according to claim 7], when the expression level of the second reporter gene relative to the expression level of the first reporter gene in the presence of the chemical substance is decreased or constant as compared with the expression level of the second reporter gene relative to the expression level of the first reporter gene in the absence of the chemical substance, and/or when the expression level of the first reporter gene in the presence of the chemical substance is increased or constant as compared with the expression level of the first reporter gene in the absence of the chemical substance, it is determined that the chemical substance is unlikely effective as an anticancer drug that mediates cell growth inhibition action and/or metabolic activity inhibition action,” (bolded and underlined emphasis added) as set forth above, Wakuri discloses the utility of dual luciferase assays in determining cytotoxicity (abstract; page 19, column 1, paragraph 2). Per Wakuri, it is known that the internal control reporter (expressed from a constitutive promoter) itself can be used for cytotoxicity evaluation because its luminescence intensity is decreased as cytotoxicity is increased (abstract; page 19, column 1, paragraph 2; page 28, column 1, paragraphs 2 and 3). Thus, based on the disclosure of Wakuri, one of ordinary skill in the art would reasonably predict that an increase in luminescence intensity from an internal control luciferase reporter (expressed from a constitutive promoter) is associated with a decrease in cytotoxicity (abstract; page 19, column 1, paragraph 2; page 28, column 1, paragraphs 2 and 3). Those of ordinary skill in the art would also be aware, prior to the effective filing date of the instant application, that anticancer drugs such as Flutamide are known to exhibit cytotoxicity (reviewed in Maruf: see abstract).
Thus, Wakuri (as evidenced by Maruf) discloses the additional analytical limitations of instant claim 9. Accordingly, it is considered that Tohoku and Wakuri (as evidenced by Maruf) collectively disclose each and every limitation of instant claim 9.
Given that Tohoku discloses a method for evaluating immunotoxicity of a chemical substance, wherein said method involves assessing the expression/activity of two separate luciferase species in the presence and absence of the queried chemical substance, that Liu discloses a dual luciferase assay for assessing cytotoxicity of queried chemical substances such as anticancer drugs (such as Flutamide, which is cytotoxic per Maruf), wherein increases over the control (expressed from the constitutive promoter) in the presence of the chemical substance versus the absence of the chemical substance (i.e. DMSO control) are interpreted as evidence of stress responses and cytotoxicity, and that Wakuri discloses that a control luciferase expressed under the control of a constitutive promoter may be used both for the normalization of the test reporter and for cytotoxicity evaluation itself in that luciferase luminescence intensity decreases as cytotoxicity increases, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to analyze the expression/activity of the separate luciferase species disclosed in Tohoku per the methods of Liu and Wakuri, both of which are also drawn to dual luciferase-based assessment of cytotoxicity, to predictably assess the cytotoxicity of queried chemical substances such as anticancer drugs in a robust and high-throughput manner, thereby determining the efficacy of said anticancer drugs. One would have been motivated to make such a modification in order to receive the expected benefit of assessing the cytotoxicity of queried chemical substances such as anticancer drugs in a robust and high-throughput manner, thereby determining the efficacy of said anticancer drugs.
Conclusion
No claims are allowed.
Claims 1-4, 6, 9, 10, and 12 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sarah E Allen whose telephone number is (571)272-0408. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at 571-272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARAH E ALLEN/Examiner, Art Unit 1637
/J. E. ANGELL/Primary Examiner, Art Unit 1637
Prosecution Insights